DETAILED ACTION
Examiner’s Note
This office action is in response to applicants’ amendments to the claims and remarks filed January 13, 2026. Claims 1-9 are pending with claims 8 and 9 being new.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of co-pending Application No. 18/723,180 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the co-pending application are directed to a hot-stamped product comprising a steel base with a plated layer having a composition overlapping the composition of the plating layer of the instant claims. One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the compositional proportions of the co-pending claims including proportions that fall within the presently claimed ranges.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of co-pending Application No. 18/285,460 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the co-pending claims include a plated steel material with a zinc containing phase, where the plating has a composition overlapping that of the instant claims. One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions in the co-pending claims, including proportions that fall within the instantly claimed ranges.
The requirement of hot-stamping is a product by process requirement. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art product was made by a different process. Further, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. (See MPEP 2113).
Absent evidence of criticality regarding the presently claimed process and given that the co-pending claims set forth a plated steel having an overlapping composition, the steel material of the co-pending claims meets the requirements of the claimed hot-stamped steel body.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of co-pending Application No. 18/285,777 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the co-pending claims include a plated steel material containing a zinc-containing phase, where the plating has a composition overlapping that of the instant claims. One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions in the co-pending claims, including proportions that fall within the instantly claimed ranges.
The requirement of hot-stamping is a product by process requirement. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art product was made by a different process. Further, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. (See MPEP 2113).
Absent evidence of criticality regarding the presently claimed process and given that the co-pending claims set forth a plated steel having an overlapping composition, the steel material of the co-pending claims meets the requirements of the claimed hot-stamped steel body.
Given that the plating contains zinc it must have a zinc inherently include a zinc containing phase.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6-7, 9, 11, 13, and 14-16 of copending Application No. 18/647,778 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the co-pending claims include a plated steel material where the plating has a composition overlapping that of the instant claims. One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions in the co-pending claims, including proportions that fall within the instantly claimed ranges.
The requirement of hot-stamping is a product by process requirement. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art product was made by a different process. Further, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. (See MPEP 2113).
Absent evidence of criticality regarding the presently claimed process and given that the co-pending claims set forth a plated steel having an overlapping composition, the steel material of the co-pending claims meets the requirements of the claimed hot-stamped steel body.
Given that the plating contains zinc it must have a zinc inherently include a zinc containing phase. Further co-pending claim 6 requires a zinc containing phase.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6-7, 9, and 12-15 of copending Application No. 18/648,041 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the co-pending claims include a plated steel material where the plating has a composition overlapping that of the instant claims. One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions in the co-pending claims, including proportions that fall within the instantly claimed ranges.
The requirement of hot-stamping is a product by process requirement. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art product was made by a different process. Further, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. (See MPEP 2113).
Absent evidence of criticality regarding the presently claimed process and given that the co-pending claims set forth a plated steel having an overlapping composition, the steel material of the co-pending claims meets the requirements of the claimed hot-stamped steel body.
Given that the plating contains zinc it must have a zinc inherently include a zinc containing phase. Further co-pending claim 6 requires a zinc containing phase.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 18/825,730 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the co-pending claims include a plated steel material with a zinc-containing phase, where the plating has a composition overlapping that of the instant claims. One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions in the co-pending claims, including proportions that fall within the instantly claimed ranges.
The requirement of hot-stamping is a product by process requirement. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art product was made by a different process. Further, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. (See MPEP 2113).
Absent evidence of criticality regarding the presently claimed process and given that the co-pending claims set forth a plated steel having an overlapping composition, the steel material of the co-pending claims meets the requirements of the claimed hot-stamped steel body.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 7, and 9-12 of copending Application No. 18/881,561 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the co-pending claims include a plated steel material, where the plating has a composition overlapping that of the instant claims. One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions in the co-pending claims, including proportions that fall within the instantly claimed ranges.
The requirement of hot-stamping is a product by process requirement. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art product was made by a different process. Further, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. (See MPEP 2113).
Absent evidence of criticality regarding the presently claimed process and given that the co-pending claims set forth a plated steel having an overlapping composition, the steel material of the co-pending claims meets the requirements of the claimed hot-stamped steel body.
Given that the plating contains zinc it must have a zinc inherently include a zinc containing phase. Further co-pending claim 6 requires a zinc containing phase.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 7, and 9-12 of copending Application No. 18/881,667 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the co-pending claims include a plated steel material, where the plating has a composition overlapping that of the instant claims. One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions in the co-pending claims, including proportions that fall within the instantly claimed ranges.
The requirement of hot-stamping is a product by process requirement. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art product was made by a different process. Further, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. (See MPEP 2113).
Absent evidence of criticality regarding the presently claimed process and given that the co-pending claims set forth a plated steel having an overlapping composition, the steel material of the co-pending claims meets the requirements of the claimed hot-stamped steel body.
Given that the plating contains zinc it must have a zinc inherently include a zinc containing phase. Further co-pending claim 6 requires a zinc containing phase.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of US Patent 12,460,288. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims include a plated steel material, where the plating has a composition overlapping that of the instant claims. One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions in the patented claims, including proportions that fall within the instantly claimed ranges.
The requirement of hot-stamping is a product by process requirement. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art product was made by a different process. Further, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. (See MPEP 2113).
Absent evidence of criticality regarding the presently claimed process and given that the patented claims set forth a plated steel having an overlapping composition, the steel material of the patented claims meets the requirements of the claimed hot-stamped steel body.
Given that the plating contains zinc it must have a zinc inherently include a zinc containing phase.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Kohsaka et al. (PGPub US 2019/0271052).
Regarding applicants’ claims 1 and 7, Kohsaka et al. discloses a steel sheet in the field of automobile manufacture (paragraph 0002-0003), the steel sheet having a coating layer (considered a plating layer) comprising in mass percent: 0.001 to 3.5% aluminum, 20.0% or less iron, and further 0 to 3.5% of one or two or more selected from Pb, Sb, Si, Sn, Mg, Mn, Ni, Cr, Co, Ca, Cu, Li, Ti Be, Bi, and REM in total and a balance of zinc (paragraphs 0063-0064). While Kohsaka et al. do not appear to disclose the exact ranges claimed, the compositional proportions overall those claimed. One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by Kohsaka et al. including those values which fall within the presently claimed ranges.
Given that Kohsaka et al. disclose a balance of zinc the plating layer. While Kohsaka et al. do not appear to disclose the exact zinc phases, the coating contains zinc and therefore must contain one or more phases containing zinc. Therefore, the coating would contain a Zn-containing phase as claimed.
The requirement of hot-stamping is a product by process requirement. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art product was made by a different process. Further, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. (See MPEP 2113).
Absent evidence of criticality regarding the presently claimed process and given that the co-pending claims set forth a plated steel having an overlapping composition, the steel material of the co-pending claims meets the requirements of the claimed hot-stamped steel body.
Regarding applicants’ claim 2, among the overlapping elements and proportions discussed above, Kohsaka et al. disclose magnesium, calcium, strontium, and REM. The examiner takes official notice that lanthanum and cerium are rare earth metals. One of ordinary skill in the art before the filing date of the invention would have found it obvious to select from the elements and proportions disclosed by Kohsaka et al. including those elements and proportions that fall within the claimed ranges (including selecting from the rare earth metals).
Regarding applicants’ claim 3-6, Kohsaka et al. discloses a coating layer (considered a plating layer) comprising in mass percent: 0.001 to 3.5% aluminum, 20.0% or less iron, and further 0 to 3.5% of one or two or more selected from Pb, Sb, Si, Sn, Mg, Mn, Ni, Cr, Co, Ca, Cu, Li, Ti Be, Bi, and REM in total and a balance of zinc (paragraphs 0063-0064). While Kohsaka et al. do not appear to disclose the exact ranges claimed, the compositional proportions overall those claimed. One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by Kohsaka et al. including those values which fall within the presently claimed ranges.
Regarding applicants’ claims 8 and 9, Kohsaka et al. disclose an aluminum content of 0.001 to 3.5% aluminum which falls within applicants’ range of 0-70% (claims 1 and 7 as discussed above), but do not appear to explicitly disclose a range of 15-70%, however the disclosed range of 0.001 to 3.5% disclosed by Kohsaka et al. is so close to applicants’ claimed range that it fails to establish a patentable distinction. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Specifically, “The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.” MPEP 2144.05 I.
In evaluating if the ranges are “so close” applicants’ specification has been reviewed with respect to the criticality of the aluminum content. Applicants’ specification includes examples which contain aluminum in amounts both inside the more broadly claimed range of 0 to 70%, and inside and outside the claimed range of 15 to 70%, however the examples including aluminum within the range do not appear to exhibit inventive properties distinct from samples containing aluminum below 15%. While applicants have support within the broader range of 0 to 70% such as to limit the minimum aluminum content to 15%, applicants’ data does not appear to support that the newly claimed limit results in a product exhibiting distinct inventive properties from the originally claimed broader range of 0 to 70%.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Kohsaka et al. (PGPub US 2019/0271052) in view of Nam et al. (PGPub US 2015/0361532).
Regarding applicants’ claims 1 and 7, Kohsaka et al. discloses a steel sheet in the field of automobile manufacture (paragraph 0002-0003), the steel sheet having a coating layer (considered a plating layer) comprising in mass percent: 0.001 to 3.5% aluminum, 20.0% or less iron, and further 0 to 3.5% of one or two or more selected from Pb, Sb, Si, Sn, Mg, Mn, Ni, Cr, Co, Ca, Cu, Li, Ti Be, Bi, and REM in total and a balance of zinc (paragraphs 0063-0064). While Kohsaka et al. do not appear to disclose the exact ranges claimed, the compositional proportions overall those claimed. One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by Kohsaka et al. including those values which fall within the presently claimed ranges.
Given that Kohsaka et al. disclose a balance of zinc the plating layer. While Kohsaka et al. do not appear to disclose the exact zinc phases, the coating contains zinc and therefore must contain one or more phases containing zinc. Therefore, the coating would contain a Zn-containing phase as claimed.
In order for steel sheets to be formed into useful panels in the manufacture of automobiles the steel sheets are subjected to shaping, including through the use of hot stamping which provides improved formability, thereby enabling the manufacture of complicated components (Nam et al. paragraph 0003). It is within the ordinary level of skill in the art to apply known techniques to known products to yield predictable results. One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to subject the steel sheets of Kohsaka, disclosed in the field of automobile manufacture, to techniques known and conventionally used to shape steel sheet for use in automobile manufacturing.
Regarding applicants’ claim 2, among the overlapping elements and proportions discussed above, Kohsaka et al. disclose magnesium, calcium, strontium, and REM. The examiner takes official notice that lanthanum and cerium are rare earth metals. One of ordinary skill in the art before the filing date of the invention would have found it obvious to select from the elements and proportions disclosed by Kohsaka et al. including those elements and proportions that fall within the claimed ranges (including selecting from the rare earth metals).
Regarding applicants’ claim 3-6, Kohsaka et al. discloses a coating layer (considered a plating layer) comprising in mass percent: 0.001 to 3.5% aluminum, 20.0% or less iron, and further 0 to 3.5% of one or two or more selected from Pb, Sb, Si, Sn, Mg, Mn, Ni, Cr, Co, Ca, Cu, Li, Ti Be, Bi, and REM in total and a balance of zinc (paragraphs 0063-0064). While Kohsaka et al. do not appear to disclose the exact ranges claimed, the compositional proportions overall those claimed. One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by Kohsaka et al. including those values which fall within the presently claimed ranges.
Regarding applicants’ claims 8 and 9, Kohsaka et al. disclose an aluminum content of 0.001 to 3.5% aluminum which falls within applicants’ range of 0-70% (claims 1 and 7 as discussed above), but do not appear to explicitly disclose a range of 15-70%, however the disclosed range of 0.001 to 3.5% disclosed by Kohsaka et al. is so close to applicants’ claimed range that it fails to establish a patentable distinction. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Specifically, “The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.” MPEP 2144.05 I.
In evaluating if the ranges are “so close” applicants’ specification has been reviewed with respect to the criticality of the aluminum content. Applicants’ specification includes examples which contain aluminum in amounts both inside the more broadly claimed range of 0 to 70%, and inside and outside the claimed range of 15 to 70%, however the examples including aluminum within the range do not appear to exhibit inventive properties distinct from samples containing aluminum below 15%. While applicants have support within the broader range of 0 to 70% such as to limit the minimum aluminum content to 15%, applicants’ data does not appear to support that the newly claimed limit results in a product exhibiting distinct inventive properties from the originally claimed broader range of 0 to 70%.
Response to Arguments
Applicants’ arguments filed January 13, 2026 have been considered and have not been found to be persuasive.
Applicants’ argue that a feature (B) where the chemical composition of the plated layer includes 5 mass % or more of Zn obtained by an exposure step and by performing hot stamping. Applicants cite comparative examples 80 and 87 in support of the criticality of the exposure steps in obtaining at least 5% zinc. However it is unclear what zinc content was present in the plating prior to hot-stamping. The platings disclosed by Kohsaka et al are zinc-based layers where the balance of zinc may exceed 70 weight %. Applicants’ claims are directed to a hot-stamped body but do not limit the parameters of the hot stamping such as the extent to which the sheet is heated or for how long. Further applicants have not demonstrated that the claimed process step of hot-stamping necessitates structural requirements not possessed by the plated steel sheet of Kohsaka et al.
Additionally, the examiner took the position that the it would be obvious to subject the plated steel sheet to hot-pressing. Given that the bulk of the plating of Kohsaka et al. is zinc, the resulting plating would be expected to contain at least 5 mass % zinc as claimed. i.e. evidence does not support loss of nearly the entire content of zinc from a zinc plating containing in excess of 70 mass % zinc, particularly where the hot-stamping parameters are not limited.
Applicants argue that the claimed hot stamped body exhibits unexpected superior effects, however evidence relied upon should establish that any differences are unexpected and unobvious and of both statistical and practical significance. While the presence of a property not possessed by the prior art may be evidence of non-obviousness, it is unclear what property is exhibited by the claimed product but which is not exhibited by the plated steel of Kohsaka et al.
Applicants argue that hot-stamping has not been afforded patentable weight and that hot-stamping imparts distinctive structural characteristics to the claimed product. The claimed process step has however been afforded patentable weight to the extent that it necessarily results in a particular structure. i.e. the step of hot-stamping is evaluated to determine what structural features are imposed. The step of ‘hot-stamping’ as not claimed to be carried out under particular conditions such as temperature, pressure, dew point, time, etc… and is thus considered broadly. Further, once a product appearing to be substantially identical is found and a prior art rejection is made the burden shifts to applicant to show a non-obvious difference (MPEP 2113 II). The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature than when a product is claimed in the conventional fashion. Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an non-obvious difference between the claimed product and the prior art product. Here the claimed processing step of ‘hot-stamping’ is not claimed to be carried out under particular conditions such as temperature, pressure, dew point, time, etc… and applicants’ have not articulated specific features necessitated by the claimed general step of hot-forming, specifically features which are not possessed by the steel sheet of Kohsaka et al.
Applicants argue that Nam fails to cure deficiencies of Kohsaka et al. however while the plated steel sheet has a chemical and structure configuration satisfying the claimed steel sheet, it is within the ordinary skill as demonstrated by Nam to subject the plated steel sheet of Kohsaka et al. to hot-pressing. While applicants’ arguments have not been found to be persuasive with respect to the product-by-process analysis as discussed above, the plated steel sheet of Kohsaka et al. in view of Nam would be hot-pressed and therefore would be hot-stamped thereby directly satisfy the requirement of hot-stamping as claimed.
For these reasons and for those reasons as discussed above applicants’ claims are not found to distinguish over the prior art and this rejection is made final.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM C KRUPICKA whose telephone number is (571)270-7086. The examiner can normally be reached Monday-Friday 8-5pm EST.
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/Adam Krupicka/Primary Examiner, Art Unit 1784
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